Occupying trademark

So eventually all the “big trademark stories” catch up to you, even if you try to avoid them as you would try to avoid … certain assemblies of people in certain locations.

Paul Elias of the Associated Press asked me what I thought about the OCCUPY WALL STREET trademark application, and that turned into this story in the Washington Post:

[Wylie] Stecklow, the attorney for the protesters, says he believed his clients will prevail because they’ve been using the phrase “Occupy Wall Street” for months before the first application was filed….

“This rush to trademark was entirely expected and predictable because this is what everybody does,” said Ron Coleman, a trademark lawyer and author of a popular trademark blog. “The irony is too rich.”

Coleman predicted the New York protesters would prevail because they’ve been using the phrase the longest. Nonetheless, he questioned how the trademark could be managed by a group claiming to be leaderless.

“Who has authority to speak on behalf of the trademark?” Coleman said.

Prevail, I said, as opposed to the t-shirt makers out West, discussed in the story, whose date of first use is both later and, it seems pretty obvious, is entirely ornamental. Then there’s the admission that, well, “Vincent Ferraro of Fer- Eng told Cable News Network that his company had no affiliation with the movement and simply filed the application as a business proposition.” That quote should pretty much deep-six that registration.

In terms of the last quote from me in the AP story, just to be clear — and Paul was typing as fast as he could,* but those don’t sound quite like my precise words — what I meant in the last quote was along these lines:The application (a copy of which you can get here) has numerous interesting aspects to it. First, a little focus on who, exactly, is making this application, and how. From the unofficial but de facto official website, here is the unofficial but de facto official description of the nature of the unincorporated association that is OWS:

OccupyWallSt.org is the unofficial de facto online resource for the growing occupation movement happening on Wall Street and around the world. We’re an affinity group committed to doing technical support work for resistance movements. We’re not a subcommittee of the NYCGA nor affiliated with Adbusters, anonymous or any other organization.

Occupy Wall Street is a people-powered movement that began on September 17, 2011 in Liberty Square in Manhattan’s Financial District, and has spread to over 100 cities in the United States and actions in over 1,500 cities globally. . . .

The occupations around the world are being organized using a non-binding consensus based collective decision making tool known as a “people’s assembly”. To learn more about how to use this process to organize your local community to fight back against social injustice, please read this quick guide on group dynamics in people’s assemblies.

That sounds complicated, to say the least, and takes the concept of unincorporated associations pretty far. How exactly do you manage a trademark by “non-binding consensus”?

I wondered who would be the signatory to this application. The application lists two “General Partners, Active Members … Trustees, or Executors,” namely Victoria Sobel and Pete Dutro. But the actual verified signer is attorney Stecklow. It also includes this unusual “Miscellaneous Statement”:

To the extent that it is possible, this application is intended to vest trademark rights in “Occupy Wall Street” in the unincorporated association “Occupy Wall Street” as a whole, not in the individual applicants as joint applicants per se. Any uses of the “Occupy Wall Street” mark herein claimed are and will be authorized by the majority vote of the General Assembly of Occupy Wall Street or a duly designated agent or agents thereof.

There are problems here.

Other problems are this: This application seems to be for all kinds of things that are tangential to the OWS movement, instead of what I would think would be the obvious, stronger application for “occupation of Wall Street services,” whatever those may be. If you’re the real Wall Street “occupiers” — well, actually they are occupying a previously obscure patch of grass called Zuccotti Park (is there a problem with geographical misdescriptiveness here? Not likely; Wall Street is far more than a specific street), why wouldn’t you describe your actual “services” instead of a description of goods and services such as the ones on the application? I will consider a couple. The first one is this:

That’s in International Class 41 (Education and Entertainment), and makes for a pretty narrow trademark, although it has the advantage of being relatively concrete. Presumably Sobel and Dutro are personally involved in the website. Good as far as it goes, though that’s not too far. Then there’s this one in International Class 25 (Clothing):

clothing, namely t-shirts, sweatshirts, headwear, and jackets for men, women and children

OK, clothing. Sounds kind of ornamental, doesn’t it? The specimen that is described as follows does not help:

pictures of Occupy Wall Street screen print station and a screen printed jacket bearing the Occupy Wall Street mark. screen prints of themark are currently made on a “pay what you can” basis, and customers are asked to provide their own shirts, jackets, etc. for printing.

This is about as profound a disconnection between a trademark and a “source of origin” of goods as you can find actually admitted to in a registration application. There is also another ornamental one for luggage and one for newsletters — but, again, none for what OWS actually and really “does.” Well, that is a tactic, I guess.

My main point to Paul Elias of the AP, though, and one he relied on other quotes to get across, is that, authorization to file aside, there is something preposterous about a trademark application for a movement that is either socialistic, anarchistic, nihilistic …. or, whatever it is, is profoundly anti-establishment. What could be more “buying into the system” than trying to nail exclusive use of what is usually described as a property right for your own organization, or non-organization, or whatever?

The other attorney on the application, Samuel Cohen, told the Wall Street Journal, “The filing was primarily a defensive move to make sure that no persons not affiliated with Occupy Wall Street were attempting to use the Occupy Wall Street name for improper purposes.”

Well, yeah. They’re all “defensive.” They’re all “to make sure that no persons not affiliated with X were attempting to use the X name for improper purposes.”

Given the amount of ink that could be spilled on this subject, I’ll limit my post to one of the most notable trends (from a trademark perspective) at hand in connection with the movement: the explosion in trademark applications including the term “occupy.” Since early October, 28 trademark applications have been filed that include the word “occupy”; of these, 21 are for clothing of some kind. Most notably, there are three pending applications for OCCUPY WALL STREET or OCCUPY WALL ST. . . .

I can’t discuss these trademark applications without addressing the underlying implication of these filings – namely, that trademark registrations can be obtained only once the applied-for goods or services are offered for sale in commerce. The attempt to protect and subsequently capitalize on the Occupy movement will undoubtedly leave a bad taste in the mouths of some protesters and a smirk on the lips of those who may equate a democratic protest with an “anarchic movement.” Nevertheless, the rush to the Trademark Office makes one thing abundantly clear: words have value, in more ways than one. And neither socio-political movements nor capitalist enterprises have a monopoly on that.

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* Of course regular readers know I could not have said “the rush to trademark” in the sense of “to trademark” being an infinitive because trademark is not a verb. I probably said “the rush to file a trademark.”

About the Title: The question of whether consumers are likely to be confused is the signal inquiry that determines if a trademark infringement claim is valid. I write here about trademark law, copyright law, free speech (mostly as it relates to the Internet) and legal issues related to blogging.

As for me, I'm Ron Coleman, an AV-rated partner at Archer - Attorneys at Law,** a firm of about 180 attorneys with offices in NJ, NY, PA and DE (but active nationwide). I've been called an "IP maven" but I'm really a commercial litigator with a special interest in copyright and trademark infringement claims involving the Internet, including advising clients how to avoid them or - if necessary - how to make the other guy wish he had.

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